Expert says trademark slipped through cracks

The name Haliburton shouldn’t have been registered as a trademark by the Canadian Intellectual Property Office (CIPO), says Toronto lawyer and trademark agent, Julie MacDonell.

“Quite a strange case,” said MacDonell in a phone interview. “Typically this would get caught at examination.”

According to records from CIPO, a trademark application was first filed in October 2015. The first examiner’s report was done in March 2016.

“An examiner’s report is an objection to the application,” she explained. “It’s a citation. They could have cited the application for a number of reasons.”

MacDonell described examiners as the gatekeepers who are “responsible for applying the law.”

Further details about the report aren’t in the public file, but MacDonell said the most benign reason for a citation is the failure to use “ordinary commercial terms.”

“If they [the applicant] just put ‘apparel’ that’s not good enough. The trademarks office wants that to be specific.”

In this case, the most serious reason would have been “a legal registrability objection” based on the name being the same as a geographical location, said MacDonell.

“In my own practice, this is not something I would think would be registrable or that I would recommend to a client to pursue.”

MacDonell has seen things slip through the cracks before because an examiner is new to the job, lacks experience or isn’t paying attention.

“Once it gets through to the approval stage, it’s not really checked,” she said.

In September 2016, the proposed trademark was advertised in the Trade-marks Journal. There is a two-month window for objections. If opposed, that could lead to the application being “totally or partially refused,” states CIPO’s website.

Typically, municipalities have someone monitor the journal to catch these applications before they go through, said MacDonell.

The CIPO office wouldn’t contact them directly about the application.

“It gets advertised to the public sort of like a liquor licence. The notice is the public advertisement of it,” she said.

The trademark was “allowed” on Dec. 23, 2016 and registered Feb. 1, 2017.

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